Appeal No. 2000-0503 Page 12
Application No. 08/902,031
Having concluded, for the reasons discussed above, that the teachings of Toth are
sufficient to establish a prima facie case of obviousness of the subject matter of independent8
claims 83, 108, 121 and 132, we recognize that evidence of secondary considerations, when
present, must be considered en route to an ultimate determination of obviousness or
nonobviousness under 35 U.S.C. § 103. Accordingly, we consider anew the issue of
obviousness under 35 U.S.C. § 103, carefully evaluating and weighing both the evidence relied
upon by the examiner and the evidence provided by the appellants. See In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) and Stratoflex Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1538, 218 USPQ 871, 879 (Fed. Cir. 1983).
Appellants (brief, page 24) argue that the declaration of Andrew J. Hinkle filed August
31, 1998 (Paper No. 6) is evidence of nonobviousness of the claimed invention over the Toth
reference. While the Hinkle declaration appears far less pertinent to claims 83, 108, 121 and
132 than to claims 1, 58 and 70, we have nevertheless carefully reviewed the declaration in
reaching our ultimate determination as to the obviousness of claims 83, 108, 121 and 132.
The Hinkle declaration states that the declarant performed a finite element analysis of
four embodiments which fall within the scope of the invention disclosed and claimed by
8Like the Court in In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), we
recognize that the concept of a "prima facie" case of obviousness is a procedural tool of patent examination which
allocates the burdens of going forward as between the examiner and the appellants, and that the determinative issue
regarding patentability in this, and any case based on obviousness, is whether the record as a whole, by a
preponderance of the evidence with due consideration to persuasiveness of argument and secondary evidence,
supports the legal conclusion that the invention claimed would have been obvious at the time the invention was made
to a person having ordinary skill in the art.
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